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Finding the best patent attorney for your new product

You’ve done the hard work developing your product. You’ve even been inspired by my previous post on using a patent attorney effectively and have done some searching. You now know how your product is different from other published technology and you’re confident that this technological difference gives the product a commercial advantage. Also, you’re pretty sure you won’t run into existing IP rights in your technology that could stop you expanding in the future (Freedom To Operate).

But, how do you know which attorney to pick to protect your invention? In this connected world, is it better to get a US attorney if your product will be sold in the US? Who is the best firm to use in New Zealand?

Three simple rules for picking the best patent attorney:

1. Pick an attorney that specialises in what you do

A patent attorney firm usually is made up of a collection of very specialised experts. This doesn’t just mean some specialise in different technologies – the electronics specialist is different to the biotech specialise. Different attorneys also cover different types of IP – for example, the person you talk to about writing a patent is usually different to the person you talk to when licensing it or suing a competitor. The average patent attorney firm has staff who specialise getting patents, those who specialise in getting trademarks, staff who specialise in opposing and litigating patents and trademarks, and staff who specialise in IP related contracts, licenses and sales contracts.

So, pick an attorney that specialises in what you do, and need; if you specialise in robotics and sell to the US and need someone to write a patent, look for a patent attorney that specialises in robotics, US patent and consumer law and specialises in patent drafting.

They will know how to word a patent specification so that it not only covers future technological developments, but is worded for your market of competitors and potential investors. Be one step ahead of investors by having a patent their attorneys will readily recognise and understand.

If you are happy explaining your technology through email and phone calls, an overseas attorney can be very valuable. They often come from big firms with hundreds of PhD’s who specialise in every imaginable topic. They also will often work over a weekend, which comes in handy if you hit a holiday deadline here. However, if your product is still under development and you want to discuss options

Disclaimer: make sure you email the NZ Intellectual Property Office before filing overseas (this is a requirement of the Patents Act in NZ).

2. Pick an attorney you can talk to

If this is the first time you have filed a patent, you will have questions. You won’t know all the ins and outs of the process, nor will you know the terms used. Having a patent attorney who you get on with, who explains things to you so you understand and make informed decisions is important.

Good attorneys:

Write you emails in language you understand

Call you to discuss detailed issues before sending out a 5 page letter

Remind you early and often of upcoming deadlines

Are happy to talk through the issues with you and explain exactly the situation and consequences of each option to reply

Write specifications that are detailed, thorough and clearly understand and explain your technology in detail

Not so good attorneys:

Leave you confused

Are difficult to understand or cut you off

Write emails with numbers and codes as the subject line

Write short (less than 15 pages) specifications that are so top-level and light you feel like they don’t understand your technology

In summary, pick someone who communicates well both in writing and when talking to you. They deeply understand your technology and can intelligently discuss it with you.

3. Take recommendations

Ask around. In most technology areas, there are one or two attorneys in each town or region that are recommended. Word of mouth is a great way to find out the good and the bad things about each attorney, so make sure to ask about that too.

Getting the best that your investors / mentors / others in your industry know is also a good way of knowing that your attorney understands your technology and industry well, which is really the most important thing.

Most firms will quickly let you know if there’s a conflict (i.e. they represent a competitor of yours) and recommend other options for you.

What not to base your decision on

You will notice I haven’t recommended a particular firm or told you to go for the lowest price. In reality, there are good and bad attorneys in each firm. Finding who you work well with is much more important than whether they are in a big name firm or not.

Similarly, prices are often set by the firm and can vary depending on technology area, country of residence, strategy and person. My only tip in this area is to ask for all hidden costs and get an estimate before starting. Never go for the cheapest cost only, without having a recommendation from someone else who has worked with the person. Spending less money at the beginning, only to find you have to spend twice as much to fix shoddy work later on isn’t good economics in anyone’s book.